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Fourth Circuit Affirms Jury Finding that "See 'N Say" is Famous, Likely Diluted

Heard about this one today, and I do dig dilution.

Seems the Fourth Circuit last month affirmed a jury’s curious finding that Mattel, Inc.’s SEE ‘N SAY and THE FARMER SAYS marks are famous and were likely to be diluted by Super Duper, Inc.’s use of SEE IT! SAY IT!, SAY AND SING, FISH AND SAY, FISH & SAY, SORT AND SAY, SORT & SAY, and SAY AND SORT marks for children’s language therapy materials.

Really? Do SEE ‘N SAY and THE FARMER SAYS really meet the statutory definition of being “widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner”? Not in my book.

Not much analysis in the (unpublished) decision, just that the Fourth Circuit wasn’t going to substitute its judgment for that of the jury.

In the court’s words, “The evidence presented at trial was sufficient for the jury to conclude that the simultaneous use of Mattel’s and Super Duper’s marks would … ‘impair[] the distinctiveness of [Mattel’s] famous marks.’”

It concluded: “[T]he jury was well situated to make the factual determination that Mattel’s marks were ‘famous,’ that sufficient similarity existed between Super Duper’s and Mattel’s marks, and that this association was likely to impair the distinctiveness of Mattel’s ‘famous’ marks. The Trademark Dilution Revision Act (‘TDRA’) requires nothing more, and we are prohibited from reweighing the evidence or drawing inferences from the facts.”

I’d be interested in learning exactly what evidence the jury was presented. I just don’t view SEE ‘N SAY and THE FARMER SAYS as being household brand names. Not by a long shot.

The case cite is Super Duper, Inc. v. Mattel, Inc., No. 09-1397 (4th Cir. June 10, 2010).

Posted on July 26, 2010 by Registered CommenterMichael Atkins in | Comments3 Comments

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Reader Comments (3)

Part of the problem may lie in the jury instructions. They did not include the TDRA's definition of a famous mark--only the four factors. So the jury was never told that a famous mark must be widely recognized by the general consuming public of the U.S. (I don't know whether anyone objected to them.)
July 27, 2010 | Unregistered CommenterDavid Welkowitz
Oops, I posted too soon. The fame definition was buried in a general instruction on dilution--the four factors were in a separate instruction that did not include the definition. That separation, however, could have had an effect on the jury. (There was also a state claim for dilution. Not clear whether that affected the jury.)
July 27, 2010 | Unregistered CommenterDavid Welkowitz
I find this law suit and the court's decision absurd. If one were to Google "See 'n Say", the first 25 pages (I stopped there) include no Super Duper product ads. The only mention of Super Duper that I saw occurs on p. 23, and that is only in relation to Mattel’s lawsuit.

As a school-based speech-language pathologist, I have used many of Super Duper's "...Say" products and not one of them can be confused with the toys that bear the "See 'n Say" trademark name. They are therapy materials, some of which are games, but in no way mimic the Mattel toy. In fact, one would be hard pressed to associate black-line master books and specific language-based flashcards with Mattel's (or Fisher Price's) toy.

I strongly feel that a parent would never confuse the Mattel talking toy with Super Duper's therapy materials. Certainly I never did...even when I purchased Mattel "See 'n Say" toys for my own children, or to use when I work with some of my severely language disabled students. While enjoyable, I no longer believe that this multi-million dollar Mattel, Inc.'s product is a necessary investment for me. Despite this, I know someone will buy it for my grandchildren. Nevertheless, I doubt that they will ever receive a Super Duper "...Say" product unless I give them one that I now use for therapy.

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